DECISION

Google Inc. v. -googleemail a/k/a googleemail.com

Claim Number: FA0401000232960

PARTIES

Complainant is Google Inc., 2400 Bayshore Parkway, Mountain View, CA 94043 (“Complainant”), represented by Rose Hagan of Google Inc.  Respondent is -googleemail a/k/a googleemail.com, 666 Screw You Lane, Bite Me, CA 90210 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleemail.com> registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Ms. Linda M Byrne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 28, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On February 9, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <googleemail.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 2, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@googleemail.com by e-mail.

A timely Response was received and determined to be complete on March 2, 2004.

On March 16, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ms. Linda M. Byrne as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain name <googleemail.com> is confusingly similar to its trademark GOOGLE both in the United States and elsewhere; that Respondent does not have any rights or legitimate interest with respect to the domain name <googleemail.com>, and that the domain name was registered and being used by Respondent in bad faith as evidenced by Respondent's providing false address information in the WHOIS record, prominently displaying the name “GOOGLEEMAIL” in font and colors similar to that of the famous GOOGLE logo, and registering the domain name primarily for the purpose of renting or selling the name for valuable consideration well beyond Respondent's out of pocket expenses.

B.  Respondent

Respondent contends that the domain name <googleemail.com> is not confusingly similar to the mark GOOGLE.  Respondent contends that it has a legitimate interest in the domain name and has not acted in bad faith since the domain name in question is merely the derivative of a character in the movie Shrek named “GooGleeBear.”

FINDINGS

The Panel finds that each of the submissions of the Complainant and Respondent was timely and properly made.  The Panel has considered all submissions made by the parties in reaching its decision.

Complainant Google Inc. is one of the largest, most highly recognized and used online search services in the world, responding to more than 200 million search queries per day.  Google Inc. offers co-branded web search solutions via partnerships with more than 130 companies in 30 different countries.

Complainant is the owner of several U.S. Trademark applications for the GOOGLE mark, including Serial No. 75/554461 covering computer hardware and software in class 9 and Serial No. 75/978469 covering search and communication services in classes 38 and 42.  Additionally, the Complainant owns registrations for the GOOGLE mark throughout the world. Lastly, Complainant owns the domain name GOOGLE across numerous top-level extensions.

The domain name at issue, <googleemail.com>, directs Internet users to a website called “BOOBLE” located at <booble.com>.  The website <booble.com> features a search engine in the field of adult and erotic materials. 

When Complainant originally filed the complaint that initiated this proceeding, Respondent used the <googleemail.com> site in connection with a webpage offering and advertising free e-mail services.  The website offered users e-mail addresses ending with “@googleemail.com.”  Shortly thereafter, on or about December 16, 2003, Complainant discovered that the domain name <googleemail.com> forwarded to <links411.com>, another website promoting free e-mail services.

In response to Complainant's cease and desist letter, Respondent suggested the domain name <googleemail.com> is pronounced “GO” “GLEE” “MAIL” in an effort to distinguish the domain name from the famous GOOGLE mark. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant owns legal rights in the GOOGLE trademark in the United States and a significant number of other countries.  Respondent's domain name <googleemail.com> fully incorporates Complainant's well-recognized trademark GOOGLE.  Specifically, Respondent's domain name <googleemail.com> is nothing more than Complainant's mark GOOGLE coupled with the generic wording EMAIL (GOOGLE EMAIL).  Additionally, Respondent has prominently displayed on its website the name “GOOGLEEMAIL” in font and colors similar to that of the famous GOOGLE logo.

The respective services of the Complainant and Respondent are closely related since both provide online search services; Complainant provides traditional search engine services, while Respondent provides a search engine in the field of adult and erotic content.  Moreover, prior to Respondent's use of the domain name for adult and erotic search engine services, the Respondent used the domain name in relation to a site offering free e-mail services.  Since many search engine services also provide free e-mail (Yahoo, MSN/HOTMAIL), the original use by the Respondent was also arguably related to that of Complainant. 

Accordingly, this panel finds that the domain name <googleemail.com> is confusingly similar to the Complainant's mark GOOGLE.

Rights or Legitimate Interests

The Panel concludes that the Respondent has not presented sufficient evidence that it owns any rights or legitimate interest in the domain name <googleemail.com> prior to Respondent’s notification of the dispute between the parties.  Respondent is not using the domain name in connection with a bona fide offering of goods or services.  Respondent is not commonly known as <googleemail.com>.  Respondent may have registered <googleemail.com> in anticipation of Complainant's entering the free e-mail services arena, i.e., with the hope that Respondent would see some commercial gain. 

Neither Respondent’s former use of the domain name to offer competing search engine services nor its current use of the domain name to trade on Complainant’s goodwill in its GOOGLE mark for commercial gain constitutes a bona fide offering of goods and services under Policy ¶ 4(c)(i).  See Ciccone v. Parisi & “Madonna.com”, D2000-0847 (WIPO Oct. 12, 2000) (holding that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.  To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).

Moreover, Respondent is not and has not been commonly known by the disputed domain name.  Respondent is not making legitimate, noncommercial or fair use of the disputed domain name, without intending to mislead and divert consumers or to tarnish Complainant’s GOOGLE mark for commercial gain.  See Google Inc. v. Freije, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (“[Respondent] would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.”)

The Panel concludes that Respondent does not have any rights or legitimate interest as defined by the Uniform Domain Name Dispute Resolution Policy. 

Registration and Use in Bad Faith

Respondent was obviously aware of Complainant's GOOGLE mark when registering the domain name, <googleemail.com>, since Respondent clearly depicted on the resolving site the wording “GOOGLEEMAIL” in a font and colors similar to that of the famous GOOGLE logo.  Furthermore, because Respondent knew of Complainant’s trademark GOOGLE, its registration and use of the domain name for commercial gain suggests opportunistic bad faith given the widespread use and fame of Complainant’s GOOGLE mark and name.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 25, 2002) (finding opportunistic bad faith where the respondent registered domain name with knowledge of Complainant's GOOGLE mark and used the website to trade on Complainant’s fame and goodwill).

Respondent’s activities indicate that Respondent registered the disputed domain name for the specific purpose of trading off the name and reputation of the Complainant.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks).

As further evidence of bad faith, Respondent amended its WHOIS information to include a fraudulent address and telephone number (666 Screw You Lane, Bite Me, California).

In summary, this Panel finds that the domain name <googleemail.com> is confusingly similar to Complainant's GOOGLE trademark, that the Respondent has no rights or legitimate interest in the domain name, and that Respondent has used the domain names in bad faith.

DECISION

The Complainant has all three elements required under the ICANN Policy; accordingly, the Panel directs that the requested relief be GRANTED.

 

Accordingly, it is Ordered that the <googleemail.com> domain name be TRANSFERRED from Respondent to Complainant.

Linda M. Byrne, Panelist
Dated: March 30, 2004

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